I FORMS OF INTELLECTUAL PROPERTY PROTECTION

Over the years Malta has established itself as an attractive jurisdiction for entrepreneurs wishing to set up businesses. Popular industries in Malta include pharmaceuticals, ICT, filming, aviation, shipping, online gaming, digital gaming and life sciences.

The country has understood and embraced the fact that intellectual property is one of the most valuable assets a business could have. With its flourishing economy that proved resilient in times of financial crises, its competitive taxation system, its strong IP laws, an appropriate network of international agreements and a continuous flow of new opportunities for such industries, Malta has managed to establish itself as a very favourable jurisdiction for such entrepreneurs establishing their business in the country.

Malta has appropriate legislation in place for the protection and enforcement of intellectual property rights. The most important forms of intellectual property protection available in the country are patents, trademarks, designs and copyrights. Protection of utility models is not possible in Malta.

i Background

The vesting of rights to intellectual property owners has been possible in Malta since 1911 in respect of copyright and since 1899 in respect of inventions, trademarks and designs. In 1995, Malta became a founding member of the World Trade Organization (WTO) and was, thus, bound by the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) from 2000. That same year the century-old laws governing copyright, patents and trademarks were repealed and replaced by new legislation. In 2002 new legislation concerning design was also introduced. The year 2000 also heralded a major revision of Maltese copyright, patents and trademark protection laws, which brought Malta in line with the relevant EU IP legislation. Malta also joined the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT) in 2007, as well as the World Intellectual Property Organization (WIPO) Copyright Treaty and the WIPO Performances and Phonograms Treaty in 2009, and adopted their corresponding regulations.

Malta’s main intellectual property laws enacted by legislature are:

  • a the Copyright Act (CA);2
  • b the Cultural Heritage Act;3
  • c the Patents and Designs Act (PDA);4
  • d the Trademarks Act (TA);5
  • e the Enforcement of Intellectual Property Rights (Regulation) Act (EIPRA);6
  • f the Patents and Designs (Amendment) Act; and
  • g the Intellectual Property Rights (Cross-Border Measures) Act (IPRA).7

Malta is currently a party to the following international IP treaties and agreements:

  • a the Berne Convention for the Protection of Literary and Artistic Works;
  • b the Paris Convention for the Protection of Industrial Property;
  • c the Universal Copyright Convention;
  • d WIPO;
  • e the WTO TRIPS Agreement;
  • f the WIPO Copyright Treaty;
  • g the WIPO Performances and Phonograms Treaty;
  • h the Patent Cooperation Treaty; and
  • i the European Patent Convention.

Pertinent Maltese IP legislation incorporates all rights and obligations arising from the domestic legislation, treaties and conventions listed above, and is in line with the TRIPS agreement and the EU acquis.

The Industrial Property Registrations Directorate (IPRD) within the Commerce Department is the office responsible for the registration of trademarks, certification marks, collective marks and designs; patenting of inventions; issuing of supplementary protection certificates in respect of pharmaceutical products and plant protection products; and the recording of transfers, cancellations, amendments and renewals relating to the aforementioned IP rights.

ii Patents

A patent may be granted in Malta for inventions that are novel, involve an inventive step and are susceptible to industrial application.

Patenting in Malta is regulated by the PDA, which incorporates all obligations arising from the PCT and the EPC, thereby extending Malta’s patent protection regime beyond the Maltese territorial boundaries and to other member or signatory countries.

When applying for a patent, a declaration claiming priority may be given to one or more earlier national, regional or international applications filed by the applicant or his or her predecessor in title. This can be done within 12 months of the date of the first filing of a patent application. This is pursuant to the Paris Convention and based on one or more earlier national, regional or international applications filed in or for any country that is party to the Paris Convention, the WTO or for any country with which Malta has made an international arrangement for mutual protection of inventions.

Owing to the rather trivial size of the Maltese market, the number of registered patents domestically is relatively low. This has resulted in a high number of possibilities especially for generic pharmaceutical manufacturers who have set up here.

Furthermore, Malta is one of the few EU countries to fully embrace the nature of the Bolar provision, which takes its name after the US case of Roche Products v. Bolar Pharmaceuticals.8 Malta has been very proactive in this regard. The Bolar provision was implemented into Maltese law in 2003, even before its accession to the EU, which would have rendered such transposition mandatory by means of Directive 2004/27/EC. The Bolar provision typically defines circumstances in which the proprietors of a patent are precluded from preventing third parties from performing acts that are otherwise protected by patent law. The PDA has adopted this exemption in a rather wide manner in that it allows generic companies to carry out clinical trials and commercial testing for the purposes of obtaining regulatory approval or other commercial purposes prior to the expiration of the lifetime of the patent concerned. This exemption does not only permit use for purely experimental purposes and scientific research but also extends to acts done privately and for non-commercial purposes, and acts done for the development and presentation of information as required under Maltese or foreign legislation regulating the production, use or sale of medicinal or phytopharmaceutical products.9

iii Designs

Protection of designs and their status as a property right is also granted by the PDA, which defines what a design is. A registered design is the personal property of its owner. The PDA also provides that a design shall be protected by registration that confers exclusive rights to the holder to use and to prevent any third party from using it without his or her consent. The proprietor’s rights have effect upon the date of registration, are protected for a period of five years from the filing of the application and can be renewed for one or more periods of five years, amounting to a total term of 25 years.

A design shall be considered new if no identical design has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority. Designs with features that differ only in immaterial details shall also be deemed to be identical.

A right in a registered design shall not subsist in:

  • a features of appearance of a product that are solely dictated by its technical function; and
  • b features of appearance of a product that must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated, or to which it is applied, to be mechanically connected to or placed in, around or against another product so that either product may perform its function.

A right in a registered design shall not subsist in a design that is contrary to public policy or to accepted principles of morality.

A registered design is transmissible by assignment, grant of a licence, testamentary disposition or operation of law in the same way as other personal or moveable property. It is also transmissible either in connection with the goodwill of a business or independently.

iv Copyright

Copyright encompasses the protection of any artistic, audiovisual, literary and musical works, and databases, and is protected through the CA. Literary works, as defined by the CA, are automatically copyrighted upon creation and receive statutory protection automatically once they are placed in the public domain. This is subject to satisfying the three criteria of eligibility: qualification, originality and fixation.

For copyright protection, formal registration of the work is not required. Copyright is granted to an eligible work automatically. The main connecting factors would be domicile or citizenship or permanent residence of the creator. Copyright protection is also conferred on every work that is eligible for copyright and that is made or first published in Malta.

Upon establishing that a work is entitled to copyright protection, such protection shall subsist for 70 years after the end of the year in which the author dies, irrespective of the date when the work is made available to the public.

Copyright endows the author of a literary, musical or artistic work with two categories of rights – material and moral. Material rights further subdivide into reproduction and distribution rights, and performance rights. Moral rights are personal rights and arise from the amount of intellectual or physical creativity exercised by the author.

v Trademarks

The TA regulates trademarks, which are defined as any sign capable of being represented graphically and that is capable of distinguishing goods or services of one undertaking from those of other undertakings. It also elaborates that trademarks can consist of words (including personal names), figurative elements, letters, numerals or the shape of goods or their packaging.

When registering one’s trademark, the right holder acquires exclusive property rights on the trademark, thus enabling the owner to protect his or her brand against any form of infringement and misuse by third parties. Moreover, Maltese trademark law also extends protection to well-known marks in Malta eligible for protection under the terms of the Paris Convention.

Under the TA, a separate trademark application must be filed for each separate class of goods and services. Despite not being a signatory to the Nice Classification of Goods and Services, as a non-participant country, Malta still follows this classification method.

A Malta Trademark is registered for a period of 10 years from the date of filing and may be renewed for further periods of 10 years. Moreover a registration may be refused on various absolute and relative grounds and may be issued with territorial or specific limitation as per use of the trademark. Priority may be claimed over a previously registered trademark if such a trademark was duly applied for in any county or territory that is a member of the WTO or a party to the Paris Convention, and if the Malta application is completed within a period of six months of the date of filing of the first application.

The process of trademark protection in Malta has been facilitated for pan-European and international businesses when Malta joined the system for European Union Trademarks (EUTM), which grants protection across European borders. This cost-effective system provided businesses with a single registration covering all the Member States of the EU, while still permitting national trademark registrations. The term of registration and renewing an EUTM is identical to the Malta trademark term of 10 years.

II RECENT DEVELOPMENTS

i Legislative background

Malta, like all other countries, has an interest in legislating in favour of the protection of intellectual property, not only because it seeks to protect the moral and economic rights of the creator and the accessibility of the resulting products to the general public, but also because it seeks to provide a safe environment that promotes creativity through the sharing of knowledge and results. This, in turn, has led to a higher level of social and economic development, competitiveness and fair trade.

Historical analysis

The vesting of rights to intellectual property owners in Malta has been possible as early as 1899 in respect of inventions, trademarks and designs, and was extended to include copyright in 1911. A relatively recent enhancement to the intellectual property package took place in 2000 in preparation for Malta’s accession to the EU.

During the span of these 16 years, the TA, the CA and the PDA and their subsidiary legislation and regulations have been amended regularly, with the most recent amendment taking place in 2014 in respect of the PDA. This ensured that the aforementioned set of IP legislation has kept pace with current, fast-paced business needs.

Industrial Property Registrations Directorate

Presently, the IP protection offered by Malta is not limited to national legislation, but also extends to a gamut of national and international laws. A person can seek different levels of international protection at a regional or even at an international level.

The IPRD handles all IP policy (including in the area of copyright) both on the national, regional (EU) and international level and provides technical direction, and presents Malta’s position (following necessary consultation) on these matters. In addition the IPRD also participates in European Commission and Council meetings as necessary and in meetings organised by the European Patent Office (EPO), the European Union Intellectual Property Office (EUIPO) and WIPO.

After EU accession in 2004, Malta became part of EUIPO, with the IPRD representing Malta in the EUIPO Administrative Board and Budget Committee, as well as attending liaison meetings that deal with the European Union Trademarks and Designs Cooperation. Through the IPRD, Malta has also become a member of the intergovernmental European Patent Organisation that extends patent protection throughout 36 European states.

In 2007, Malta widened its horizons in respect of international patent protection when it became a member of the PCT and the EPC. In 2009, Malta continued to increase its IP protection regime by acceding to the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty.

Intellectual Property Rights (Cross-Border Measures) Act

Through the IPRA, the Maltese legislator established measures relating to the importation into Malta, and the exportation and re-exportation from Malta, of goods in contravention of IP rights. Malta’s applicable law with regards to counterfeit goods and the relevant procedure for intervention is in line with the relevant EU Regulations and Directives. It is important to note that the protection granted by virtue of the IPRA to the right holder, will not be enjoyed in cases where goods bearing trademarks, or protected by patents, copyrights and design rights, have been manufactured with the consent of the right holder even though they have been subsequently put into circulation without the consent of the right holder.

The Patents Tribunal

The PDA was subject to a major update in 2014 when a bill was tabled in Parliament to amend patent legislation. Several amendments were put forward, the most prominent being the establishment of the Patents Tribunal,10 which is a specialised court attributed exclusive jurisdiction to hear and determine claims relating to patent infringement and revocation and actions related thereto. It was also specified that claims for damages arising from infringement will continue to be determined by the First Hall of the Civil Court.

Other noteworthy revisions included:

  • a authority being bestowed on the comptroller obliging an applicant to present a search report together with the patent application;
  • b alterations to the process for the examination of formalities in an application;
  • c modifications to sections related to the manner by which a patent is revoked; and
  • d changes to the manner for determination of an earlier filing date when priority is claimed.

In December 2014, the commencement notice implementing such amendments presented by the Bill was published.11 The new PDA now incorporates these amendments.

‘Making Malta an IP hub’ project

It is also important to note that on 24 November 2014, a project was launched entitled ‘Making Malta an IP hub’. The main aim behind this exercise is to consolidate the various IP laws into one Code, providing the knowledge sector with a solid, yet pragmatic legal framework. Matters being tackled include:

  • a the creation of a unified electronic register for all forms of IP, where all registrations can be filed and searches can be conducted electronically;
  • b the introduction of the concept of voluntary registrations of copyright, which would be vital to a number of the industries Malta seeks to promote, including IT, digital gaming, film, music and the arts;
  • c the introduction of recognition and protection measures for novel forms of IP, such as image rights and trade secrets; and
  • d the introduction of specialised IP courts and the facilitation of the placing of IP as security for financing.

This project is still ongoing.

ii Litigation

Matters related to litigation, procedure and formalities adopted in Malta are outlined in this subsection.

Opposition

It is interesting to note that Malta presents no pre-grant or post-grant opposition procedure, in relation to patents, even though a pre-grant opposition procedure is foreseen.

Appeal

An appeal, which shall have suspensive effect, may be made from a decision of the comptroller or the arbiter, as applicable, where the decision consists of:

  • a refusal of a patent, in which case the appeal may be made only by the applicant;
  • b refusal of a notice for revocation of a patent, in which case the appeal may be made only by the person filing the notice;
  • c acceptance of a notice for revocation of a patent, in which case the appeal may be made only by the proprietor of the patent;
  • d refusal of a notice of revocation of a priority claim, in which case the appeal may be made only by the person filing the notice;
  • e acceptance of a notice of revocation of a priority claim, in which case the appeal may be made only by the proprietor of the patent;
  • f refusal of an application for the re-establishment of rights, in which case the appeal may be made only by the proprietor of the patent; and
  • g refusal of any other request of the patent applicant or patent proprietor, in which case the appeal may be made only by the patent applicant or patent proprietor respectively.12

The types of appeal listed above may only be made to the Court of Appeal within 30 days of the date of service of the decision of the comptroller. In the case of revocation proceedings initiated directly with the Patents Tribunal in accordance with Article 44 of the PDA, any party to the proceedings that feels aggrieved by the decision of the Patents Tribunal may appeal to the Court of Appeal on points of law, only by means of an application filed in the registry of that court within 30 days from the date of the decision of the Patents Tribunal. The Court of Appeal shall be constituted in accordance with Article 41(6) of the Code of Organisation and Civil Procedure (COCP).13 The Rule-Making Board established under Article 29 of the COCP may make rules governing appeals to the Court of Appeal. With regard to costs, the Court of Appeal may make an order in accordance with the provisions of Article 223 of the COCP.

The Patents Tribunal

As mentioned in subsection i, supra, the amendments to the PDA resulted in the creation of the Patents Tribunal, which has jurisdiction to hear and determine claims that concern the revocation of a patent, civil claims for infringement, applications for declarations of non-infringement and precautionary actions related to the above. Claims for damages arising from any infringement shall continue to be determined by the First Hall of the Civil Court.14

Case law

With regard to patent case law, Malta, unlike common law jurisdictions, does not follow the law of precedent. Therefore courts are not bound by law to follow the footsteps of earlier judgments. However, it is frequently the case that judges still refer to previous similar judgments.

There are not many cases related to patent law in Malta. In John Mifsud v. Angelo Dalli Et,15 the defendant made use of and put on the market a product that was already patented. The Civil Court accepted the pleas of the plaintiff and prohibited the defendant from making use of the product. It also confiscated the machinery and all other means used for the production and selling of the product.

In Melita Marine Ltd v. Mark Darmanin Kissaun,16 the plaintiff asked for the revocation of a patent regarding the method used to attach a sail on a marine vehicle. The plaintiff argued that the specification did not delineate a new invention and did not include an inventive step. Moreover it was shown that the defendant had not registered his patent within the first two years of a period of trial and error and had already put it on the market, disqualifying the invention from becoming patentable. The Court of Appeal accepted the claims of the plaintiff and revoked the patent that had been granted.

In Salv Muscat Marbles Ltd v. Godwin Sacco et, the court found for the owner of the right and prohibited the defendants from making use of the product already patented.17

III OBTAINING PROTECTION

i Patentability
General

Part IV of the PDA deals with the attainment of patent protection of inventions. Article 4(1) provides that inventions that are new, involve an inventive step and are susceptible of industrial applications shall be patentable provided that: such inventions shall also be patentable even if they concern a product consisting of or containing biological material or a process by means of which biological material is produced, processed or used; and that biological material that is isolated from its natural environment or produced by means of a technical process may be the subject of an invention if it previously occurred in nature.

Following the above, in Article 4(2), the PDA also meticulously specifies what shall not be regarded as an invention:

  • a discoveries, scientific theories and mathematical methods;
  • b aesthetic creations;
  • c schemes, rules and methods for performing mental acts, playing games or doing business and programs for computers; and
  • d presentations of information.

Article 4(5) of the PDA specifies a number of instances where patent applications are refused. The following are listed:

  • a an invention the exploitation of which would be contrary to public order or morality;18
  • b the human body, at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene;19
  • c processes for cloning the human body, processes for modifying the germ line genetic identity of the human body and uses of the human embryo for industrial or commercial purposes;
  • d processes and products for modifying the genetic identity of animals that are likely to cause them suffering without any substantial medical benefits to man or animal;
  • e plant and animal varieties;20
  • f essentially biological process of the production of plants or animals;21 and
  • g a DNA sequence not containing any technical information and in particular any indication of its function.
Business methods

In accordance with Article 4(2)(c) of the PDA business methods are not patentable in Malta.

Computer software

Maltese patent legislation does not cover computer software, but such software falls within the ambit of copyright protection. The reason that software is not deemed to fall within the definition of a patent could refer to the versatile nature of computer programs that renders them difficult to define. Article 4(2)(c) specifically excludes from patent protection schemes, rules and methods for performing mental acts, playing games, doing business and the creation of computer programs.

Methods for treating patients, both with drugs and medical procedures

As per Article 4(4) of the PDA, methods used on a human or animal body by surgery or therapy, and diagnostic methods practised on a human or animal body are not regarded as inventions that are capable of industrial application, and therefore do not fall within the definition of what makes an invention patentable. However, any products, particularly substances and compositions that are used in the aforementioned methods, can receive patent protection.

ii Special disclosure requirements

The patent application must disclose the invention in an appropriate and clear manner and must be complete enough for a person who is skilled in the area to carry out the invention.

For the purposes of Article 5 of the PDA, a disclosure of the invention shall not be taken into consideration if it occurred no earlier than six months preceding the filing of the patent application and if it was because of an evident abuse in relation to the applicant or his or her legal predecessor; or the fact that the applicant or his or her legal predecessor has displayed the invention at an official, or officially recognised, international exhibition.22

iii Filing requirements

An application must be filed in duplicate and must include a request for the grant of a patent, a description of the invention, any other claims, any drawings referred to in the description or claims, an abstract of the invention and its title outlining its technical designation. The Patents Regulations 200223 are a detailed set of rules that include an outline of the procedure for filing. These Regulations provide that all inventors shall be designated, and if the applicant is not the inventor, or only one of the inventors, the applicant must provide the legal grounds on which he or she is entitled to file the registration.

iv Prior art

As in most other jurisdictions, for an invention to be considered as novel, it must not form part of the prior art. This includes material that was readily available to the public as well as the content of any other patent previously filed, or that has effect in Malta.

v Length of protection

The standard term of protection of a patent is 20 years from the filing of application; however, this term may be extended for a maximum of five years through a Supplementary Protection Certificate. Pharmaceutical companies often seek this extended term of protection because of the lengthy procedures needed to acquire the necessary marketing authorisation.

vi Grace period

The payment of the official annuity fee has to be made by the last day of the month in which the patent renewal falls due. If it is not carried out, the patent holder will be subject to an official late payment fine. When a deadline falls on a weekend or a public holiday, payment is to be effected on a working day prior to the weekend or public holiday. A grace period of six months from the end of the month in which patent renewal falls shall be given, and no renewal of the grace period is possible.

vii Publication

After the decision to grant an application has been taken, the comptroller shall publish a notice in the government gazette or any other relevant publication.

IV ENFORCEMENT OF RIGHTS

i Possible venues for enforcement

As outlined in Section II.i, supra, one of the main amendments to the PDA was the setting up of a Patents Tribunal, which has jurisdiction over cases regarding the revocation of patents, claims of infringement and declarations of non-infringement, and is also in charge of issuing precautionary warrants. With regard to patent revocation, some cases may be referred to the comptroller. Even though the Patents Tribunal has been set up, the First Hall of the Civil Court is still the appropriate venue to file claims for damages that arise out of infringement, as well as for the enforcement of design patents.

ii Requirements for jurisdiction and venue

EIPRA regulates the enforcement of intellectual property rights. EIPRA delineates those persons who are entitled to avail themselves of the measures, means, procedures and remedies provided by the Act, namely persons who are the holders of intellectual property rights or those who are authorised to use the aforementioned right, particularly who are licensees of such right, as well as recognised collecting societies and professional defence bodies that represent holders of intellectual property rights.24

EIPRA provides for the procedure for collating evidence, measures for preserving evidence, the right of information and measures (provisional and precautionary) to be taken by the court.25

iii Obtaining relevant evidence of infringment

In determining any application filed before it, the Patents Tribunal shall give an opportunity to all parties concerned to put forward their evidence and submissions and it may also order the production of any additional expert evidence and secure expert opinion as it may consider necessary. In its decision, the Patents Tribunal shall also decide upon responsibility for the payment of any costs incurred in the proceedings, including the cost of expert evidence or searches or opinions.26

iv Trial decision-maker

The Patents Tribunal is appointed by the prime minister and consists of a chairman (a judge or a magistrate) and two other members.27 Decisions of the Tribunal are delivered by the chairman and reached by simple majority, and the chairman must be part of that majority.28

The chairman and members of the Patents Tribunal are appointed for a term of three years and are eligible for reappointment.29

The Patents Tribunal is independent and cannot act under the direction or control of any other person in the performance of its functions.30

The minister responsible for the protection of industrial property may appoint one or more persons to serve as arbiters in cases that are referred to them from time to time. The person so appointed must have held a warrant to practise the profession of advocate in Malta for at least seven years; and the appointment shall be for a period of three years and may be renewed. The arbiter shall, before entering upon his or her duties, take an oath of office before the attorney general in the form approved by the minister responsible for the protection of industrial property.

The arbiter has the power to take expert advice when necessary, at his or her discretion, and to summon any person to appear before him or her to give evidence on oath and to produce documents; for these purposes he or she will have powers conferred by law on the First Hall of the Civil Court. Every summons must be signed by the arbiter and must either be served personally or by registered post, and in the latter case, in proving service, it shall be sufficient to prove that the summons was properly addressed and posted.31

v Structure of the trial

Infringement proceedings can be brought before the Patents Tribunal and may not be instituted after five years from the date when the injured party obtained knowledge of the infringement and of the identity of the alleged infringer.

Where the subject matter of the patent or the patent application is a process for obtaining a new product, the same product when produced by any other party shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process or the process contained in the patent application.

In the assessment of any proof to the contrary by the defendant, the legitimate interests of the defendant in protecting his or her manufacturing and business secrets shall be taken into account by the Patents Tribunal.32

The Patents Tribunal shall stay any proceedings for infringement in respect of:

  • a a patent application filed with the comptroller until after a final decision has been made by the comptroller to grant or refuse a patent on the application; and
  • b a patent application filed at the EPO until after a final decision has been made by the EPO to grant or refuse a patent on the application.

The defendant in such proceedings may, in the same proceedings, request the revocation of the patent on any of the grounds referred to in Article 44 of the PDA. In any such case, the comptroller shall be made a party to the proceedings.

Any interested person shall have the right to request, by instituting proceedings against the proprietor of the patent or of the patent application, that the Patents Tribunal declare that the performance of a specific act does not constitute an infringement of the patent.

If the person making the request proves that the act in question does not constitute an infringement of the patent, the Tribunal shall grant a declaration of non-infringement.33

vi Infringement

In a civil action, any person who exploits a patented invention or patent application shall be liable in damages towards the proprietor of the patent, a patent application or the licensee. The application to sue for damages may be made before the Patents Tribunal without prejudice to the right of such person to apply for the issue of any precautionary warrant as provided in the COCP to protect his or her rights.34

In criminal actions, whoever puts into circulation, or sells any article, falsely representing that it is a patented article shall, on conviction, be liable to a fine. If any person puts into circulation or sells an article having stamped, engraved or impressed thereon or otherwise applied thereto the word ‘patent’, ‘patented’ or any other word expressing or implying that a patent has been obtained for the article, that person shall be deemed for the purpose of that article to represent that it is patented.35

vii Time to first-level decision

In the case of a notice for revocation filed directly before the Patents Tribunal, the Tribunal shall, as soon as possible upon receiving a notice for revocation of a patent, notify the patent owner who shall, within 90 days of the date of service, file his or her reply. Non-compliance with the deadline given by the comptroller or the above requirements shall render the reply inadmissible. The Patents Tribunal shall hear and determine the case for revocation as far as possible within nine months from the date of the institution of the case. The Patents Tribunal shall regulate its own procedure.36

viii Remedies

Any person who exploits a patented invention or patent application shall be liable in damages towards the proprietor of the patent, a patent application or the licensee. The application to sue for damages may be made before the Patents Tribunal without prejudice to the right of such person to apply for the issue of any precautionary warrant as provided in the COCP to protect his or her rights. The Patents Tribunal may, moreover, at the demand of the plaintiff, order that the machinery or other industrial means or contrivances used in contravention of the patent, the infringing articles and the apparatus destined for their production, be forfeited, wholly or partially, and delivered to the proprietor of the patent or of the patent application, without prejudice to the relief mentioned in Article 47 of the PDA.37

The PDA provides that whoever puts into circulation or sells any article, falsely representing that it is a patented article shall, on conviction, be liable to a fine of not less than €232.94 and not more than €11,646.87. If any person puts into circulation or sells an article having stamped, engraved or impressed thereon or otherwise applied thereto the word ‘patent’, ‘patented’ or any other word expressing or implying that a patent has been obtained for the article, he or she shall be deemed for the purpose of this article to represent that the article is a patented article.38

If the owner of any such offending goods is unknown or cannot be found, any magistrate may, by warrant under his or her hand, direct any officer of the executive police named in the warrant to enter any house, premises or place so named, and search for, seize and remove such goods.39 The seized goods shall be produced before the Court of Magistrates sitting as a court of criminal judicature, and such court shall determine whether they are liable to forfeiture under the PDA.40

ix Appellate review

An appeal shall have a suspensive effect. An appeal may be made from a decision of the comptroller or the arbiter, as applicable, where the decision consists of:

  • a refusal of a patent, in which case the appeal may be made only by the applicant;
  • b refusal of a notice for revocation of a patent, in which case the appeal may be made only by the person filing the notice;
  • c acceptance of a notice for revocation of a patent, in which case the appeal may be made only by the proprietor of the patent;
  • d refusal of a notice of revocation of a priority claim, in which case the appeal may be made only by the person filing the notice;
  • e acceptance of a notice of revocation of a priority claim, in which case the appeal may be made only by the proprietor of the patent;
  • f refusal of an application for the re-establishment of rights, in which case the appeal may be made only by the proprietor of the patent; and
  • g refusal of any other request of the patent applicant or patent proprietor, in which case the appeal may be made only by the patent applicant or patent proprietor respectively.41

Such appeal referred to above may only be made to the Court of Appeal within 30 days of the date of service of the decision of the comptroller.42

In the case of revocation proceedings initiated directly with the Patents Tribunal in accordance with Article 44 of the PDA, any party to the proceedings that feels aggrieved by the decision of the Patents Tribunal may appeal to the Court of Appeal on points of law only by means of an application filed in the registry of that court within 30 days from the date of the decision of the Patents Tribunal.43

x Alternatives to litigation

In Malta, currently both pre- and post-grant opposition proceedings are unavailable.

Arbitration and mediation are both valid venues for alternative dispute resolution in Malta. These routes are not compulsory, yet may result in less costly mechanisms for interested parties. Generally, any matter that is the subject of a dispute is capable of settlement by arbitration. Part IV of the Arbitration Act44 deals with the conduct of domestic arbitration in the settlement of disputes, which are defined to include any controversy or claim arising out of or relating to an agreement, or the breach, termination or invalidity thereof or failure to comply therewith. Part V of the Arbitration Act deals with international commercial arbitration. Part V incorporates into Maltese law, the UNCITRAL Model Law on International Commercial Arbitration, which is a well-known and tested legal regime that has been adopted in many countries around the world.

xi Legal costs

In an action, the court45 shall, as a general rule, decree that the judicial costs and other expenses incurred by the successful party be borne by the unsuccessful party unless it considers that equity otherwise requires.46

V TRENDS AND OUTLOOK

Most likely, the most noteworthy initiative in the last couple of years was the launch of the project intended to dub Malta as an ‘Intellectual Property Hub’. The aim of this initiative is to attract more investors to Malta by ensuring the highest levels of protection possible, and for this to be achieved, a solid legislative framework must be put in place to cater for all the possible legal requirements of such right holders. The initiative proposes plans that not only provide for greater certainty in relation to the property rights of intangible assets, but also proposes a legal framework which will safeguard proprietors further and will provide them with inventive ways on how to best exploit their rights, hence facilitating financing and the raising of capital.

In July 2015, Malta signed a memorandum of understanding (MOU) with China for cooperation in the field of intellectual property law. Through this MOU, the two countries intend to exchange information and good practice on IP. The MOU consists of a work plan for the sharing of information on IP laws, policies and working experiences, exchange and training of personnel, organisation of joint seminars, introduction of IP holding companies and IP intermediary service organs in Malta. Since it is estimated that 40 per cent of all economic activity in the EU is based on the industries directly involved with intellectual property rights, Malta aims to be among pioneers when it comes to IP rights. The MOU with China (and similar MOUs) are but the initial step to the attainment of efficient and effective intellectual property right protection for Maltese entities.

In the past decade, Malta’s previous and revised IP offerings and the whole range of IP laws and regulations have proven to be essential to creative industries such as iGaming, digital gaming, financial technology, software development, e-commerce and pharmaceuticals. Intellectual property has certainly acted as a catalyst in attracting global players to Malta’s shores. It is envisaged that such regular IP initiatives coupled with sound corporate and tax laws will continue to reinforce Malta’s position as a centre for excellence for creative industries with the aim of taking on a more developed leading role in the coming years.

1 Maria Chetcuti Cauchi is a senior partner at Chetcuti Cauchi Advocates.

2 Copyright Act (Chapter 415) (2000). Act XIII of 2000, as amended by Acts VI of 2001, IX of 2003, IX of 2009 and VIII of 2011.

3 Cultural Heritage Act (Chapter 445) (2009). Act VI of 2002, as amended by Acts XVIII of 2002, II of 2005 and XXXII of 2007; Legal Notice 426 of 2007; and Acts XXIII of 2009 and XXXIV of 2016.

4 Patents and Designs Act (Chapter 417) (2007). ACT XVII of 2000, as amended by Acts IX of 2003 and XVIII of 2005; Legal Notices 181 and 186 of 2006 and 426 of 2007; and Act XXX of 2014.

5 Trademarks Act (Chapter 416) (2007). Act XVI of 2000, as amended by Act IX of 2003; and Legal Notices 181 and 186 of 2006 and 426 of 2007.

6 Enforcement of Intellectual Property Rights (Regulation) Act (Chapter 488) (2006).

7 Intellectual Property Rights (Cross-Border Measures) Act (Chapter 414) (2000).

8 733 F.2d 858 (Federal Circuit 1984).

9 PDA, Article 27(6).

10 Article 58 of the Bill entitled ‘An Act to amend the Patents and Designs Act (Chapter 417) and to make provision with respect to matters ancillary thereto or connected therewith’.

11 L.N. 424 of 2015: Patents and Designs (Amendment) Act 2014 (Act XXX of 2014); Commencement Notice.

12 PDA, Article 58(1).

13 COCP, Chapter 12.

14 PDA, Article 58A (1).

15 John Mifsud v. Angelo Dalli Et decided by the Civil Court, First Hall 23 June 2009.

16 Melita Marine Ltd v. Mark Darmanin Kissaun decided by the Court of Appeal, 29 June 2012.

17 Salv Muscat Marbles Ltd v. Godwin Sacco et decided by the Civil Court First Hall on 18 May 2015.

18 Proviso: provided that exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation.

19 Proviso: provided that an element isolated from the human body or otherwise produced by means of a technical process, including the sequence or partial sequence of a gene, may constitute a patentable invention, even if the structure of that element is identical to that of a natural element.

20 Proviso: provided that patents shall not be granted for plant varieties only after a new form of plant variety protection is introduced in such form as may be prescribed. Provided further that a patent may still be granted for a plant variety in respect of which a patent application is still pending on the date that a new form of plant variety protection is prescribed.

21 Proviso: provided that this is without prejudice to the patentability of inventions that concern a microbiological or other technical process or a product obtained by means of such a process.

22 PDA, Article 8.

23 Patent Regulations 2002, L.N. 117 of 2002 as amended.

24 EIPRA (Chapter 488) (2006), Article 3.

25 The court that is competent to take cognisance of a case according to the rules established in the COCP.

26 PDA, Article 58A.

27 PDA, Article 58A(2).

28 PDA, Article 58A(3).

29 PDA, Article 58A(4).

30 PDA, Article 58A(5).

31 PDA, Article 58B(1–3).

32 PDA, Article 48.

33 PDA, Article 49.

34 PDA, Article 47.

35 PDA, Article 50.

36 PDA, Article 44B.

37 PDA, Article 47.

38 PDA, Article 50.

39 PDA, Article 51.

40 PDA, Article 52.

41 PDA (Chapter 417), Article 58(1).

42 PDA (Chapter 417), Article 58(2).

43 PDA (Chapter 417), Article 58(3).

44 Arbitration Act (Chapter 387).

45 The court that is competent to take cognisance of a case according to the rules established in the COCP.

46 EIPRA (Chapter 488) (2006), Article 13.